[00:00:00] Speaker 01:
Next case is Dome, Patton versus Lee.

[00:00:40] Speaker 01:
Good morning, Mr. Towns.

[00:00:42] Speaker 01:
You're reserving four minutes.

[00:00:44] Speaker 01:
Yes, sir.

[00:00:44] Speaker 01:
All right.

[00:00:45] Speaker 01:
You may proceed.

[00:00:46] Speaker 02:
May it please the court.

[00:00:48] Speaker 02:
This appeal concerns a challenge to the validity of Claim 1 of United States Patent 4-306-042 to NEAF.

[00:00:59] Speaker 02:
The threshold issue in this appeal is whether Section 282A of the Patent Act

[00:01:05] Speaker 02:
constrains the decision-making authority of patent trial and appeal boards in the same way that it constrains the authority of federal courts.

[00:01:16] Speaker 02:
That constraint is, in order for an issued claim in a patent, for a property right in a patent to be taken away without compensation, the law requires that the factual predicates of an invalidity theory be proved

[00:01:35] Speaker 02:
to a high degree of probability.

[00:01:38] Speaker 04:
Do you think that which standard of proof, whether it's clear and convincing evidence or the preponderance, those are the dueling standards here, correct?

[00:01:47] Speaker 02:
Yes, Your Honor.

[00:01:47] Speaker 04:
Do you think it makes a difference in this case?

[00:01:51] Speaker 02:
I most certainly think it makes a huge difference in this case, not just the confidence.

[00:01:56] Speaker 04:
No, I'm sorry.

[00:01:57] Speaker 04:
Time is limited.

[00:01:58] Speaker 04:
That's why I jumped in.

[00:02:00] Speaker 04:
So are you saying that if we agree with the

[00:02:05] Speaker 04:
And I would ask your opponent the same question, only the flip side, that if we agree with the district court that preponderance of the evidence is the correct standard, you lose.

[00:02:15] Speaker 02:
I would not concede that.

[00:02:17] Speaker 02:
If Your Honor agrees, because there's not... Because you said it makes a difference.

[00:02:21] Speaker 02:
It does make a difference, but it makes my case very easy.

[00:02:24] Speaker 04:
Because it's a very... I mean, I think, quite frankly, I think on the merits of the case,

[00:02:31] Speaker 04:
Both sides here are well within the pale of reasonableness in their arguments.

[00:02:35] Speaker 04:
It's a close case.

[00:02:38] Speaker 04:
So it seems to me to be maybe one of those situations where the standard of proof does make a difference, because you've got these competing points, the balancing of the wettability, the oxygen factor.

[00:02:54] Speaker 04:
So maybe it is a case where what standard obtains makes a difference.

[00:02:58] Speaker 02:
It absolutely does.

[00:02:59] Speaker 02:
Not just on the degree of certainty that must be held by the fact finder before it is authorized to take a property right away, but also in who bears what burden of proof.

[00:03:11] Speaker 02:
Because the district judge in this case of the government's instigation, even though this was a civil action in district court, treated this case as if we were in the patent office and Doam was a mere applicant seeking

[00:03:22] Speaker 02:
to be granted a patent in the first time.

[00:03:24] Speaker 02:
The district court over and over again said, well, the government has made a prima facie case of obviousness and therefore the burden shifts to dome to prove non-obviousness.

[00:03:33] Speaker 02:
And that made a huge practical difference in terms of who has to come forward with what.

[00:03:39] Speaker 02:
We have in this case an unbelievable situation in which the history of the case is pretty much set up in the first page of our reply brief.

[00:03:49] Speaker 02:
We have a situation in which

[00:03:51] Speaker 02:
Starting in the mid-1970s, artisans trying to solve the same problem that Mr. Neece solved came up with very different solutions.

[00:04:00] Speaker 02:
We have concrete, real-world evidence of what was and was not obvious at the time.

[00:04:06] Speaker 04:
Well, does it really come down to whether one of skilled in the art would have been motivated to combine the teachings of Gaylord and Tanaka?

[00:04:20] Speaker 02:
Here's what distinguishes this case from other cases.

[00:04:24] Speaker 02:
The theory that the government presented to the trial court in this case.

[00:04:27] Speaker 02:
Is that the issue?

[00:04:28] Speaker 04:
That's the issue, isn't it?

[00:04:30] Speaker 02:
The issue in the case is whether or not the entire process of Neve claimed one as a whole was rendered obvious by the prior art that the government relied on in this case.

[00:04:41] Speaker 02:
So what we have here is a process, a six-step process, in which Mr. Neve says, what you do is you

[00:04:50] Speaker 02:
create a Tris monomer.

[00:04:54] Speaker 02:
And Tris monomer was one of the monomers used in the early patents, the Gaylord 1, Gaylord 2, and Ellis, the maker of the Boston 2 lens.

[00:05:03] Speaker 02:
They also worked with Tris, but they didn't come up with a nice solution.

[00:05:07] Speaker 02:
Then after Ellis, you had Novicki, and you had Tanaka, who proposed completely different systems for contact lens manufacturers.

[00:05:15] Speaker 02:
Don't use Tris, use other monomers and Tanaka specifically gives various reasons why it's a bad idea to use Tris.

[00:05:23] Speaker 02:
So you have what a fact finder could reasonably have found was a contemporaneous failure.

[00:05:29] Speaker 02:
Tanaka, a paper patent who says, don't use Tris because if you use Tris, you have to copolymerize it with a hydrophilic co-monomer and that's difficult.

[00:05:38] Speaker 02:
So what I've done is I've come up with a new novel monomer of my own.

[00:05:42] Speaker 04:
And was it a total teaching away?

[00:05:47] Speaker 04:
Because couldn't you use the tris so long as you had enough infusion of hydrophilic elements in the whole mix?

[00:06:02] Speaker 02:
I would say two things in response to that.

[00:06:04] Speaker 02:
First of all, the theory that you just articulated was a different one than the board adopted.

[00:06:09] Speaker 02:
That was the government's mid-trial change of strategy after they realized that their own expert's theory was insupportable.

[00:06:16] Speaker 02:
Number one.

[00:06:17] Speaker 02:
Number two, when you talk about teaching away, you've already shifted the burden to don't.

[00:06:22] Speaker 02:
We would argue that the question is not whether Tanaka teaches away.

[00:06:27] Speaker 02:
The question is whether or not a person skilled in the art reading Tanaka as a whole

[00:06:32] Speaker 02:
would find in there a reason to do the opposite of what Tanaka says to be done.

[00:06:37] Speaker 02:
Tanaka says it's hard to use Tris because in order to suppress the foreign body sensation of a hydrophobic monomer like Tris, you've got to put so much of the other kind of co-monomer in there that it makes the oxygen permeability go way down.

[00:06:51] Speaker 04:
So this is why the patent gives a lot of leeway in the final paragraph there, doesn't it, in terms of the various components?

[00:06:59] Speaker 04:
The ranges are pretty broad.

[00:07:01] Speaker 02:
Well, in the NEIF patent, in the end.

[00:07:03] Speaker 02:
You're talking about the NEIF patent now?

[00:07:04] Speaker 02:
Yes.

[00:07:05] Speaker 02:
Yes.

[00:07:05] Speaker 02:
Well, the breadth of the NEIF patent gets into what the district court called its commensurateness argument.

[00:07:14] Speaker 02:
So it's not that Tanaka suggested a reason to make a contact lens manufacturing process like NEIF at all.

[00:07:24] Speaker 02:
What the government said

[00:07:27] Speaker 02:
was that Tanaka shows this huge range of cross-linking agents.

[00:07:32] Speaker 02:
Conventional ones, a novel one of his own design, and a 40-year-old one that had been disclosed in the 1950s.

[00:07:39] Speaker 02:
And he says, with my monomer, you can use any member of this huge, huge genus of cross-linking agents.

[00:07:45] Speaker 02:
So the government is saying, well, since Tanaka disclosed this huge range of cross-linking agents, it therefore was obvious to pick out one

[00:07:55] Speaker 02:
and then use that to go in a different direction and modify the old Gaylord Chris Palmer.

[00:08:01] Speaker 04:
Where are we left when we look at the state of the art seemed to be that there was kind of everyone knew what we were looking for this balance between wettability and oxygen permeability and doesn't it appear that people were could see there was a certain range of things that you could play around with for want of a better term

[00:08:25] Speaker 04:
to get what you were looking for.

[00:08:27] Speaker 02:
Well, the best I can do about that is... That was one skill in the art maybe.

[00:08:32] Speaker 04:
Is that wrong?

[00:08:33] Speaker 02:
Yes, because the best I can do is to point, Your Honor, to pages 1982 and 1983 of the Joint Appendix in which we had, in this case, what the government's position was in 2007, 8, 9, 10, 11, 12, and the beginning of the trial.

[00:08:52] Speaker 02:
At the bottom of this page,

[00:08:54] Speaker 02:
the government's position, what the board said, because they were misunderstanding the prior art.

[00:08:59] Speaker 02:
This invention was so not obvious that the government misunderstood the reference.

[00:09:03] Speaker 04:
This is 1982?

[00:09:04] Speaker 02:
Yes, where at the very bottom of the page, he says, you said, to offset the hydrophobicity of the standard tris monomer, as in Gaylord and Tanaka, the cross... Counselor, where are you reading from?

[00:09:17] Speaker 02:
Page 1982, line 24, and carrying over to the next page.

[00:09:23] Speaker ?:
Okay.

[00:09:23] Speaker 02:
You said, to offset the hydrophobicity of the standard Tris monomer, as in Gaylord and Tanaka, the cross-linking monomer would necessarily be hydrophilic, whether bearing saloxane units or not.

[00:09:36] Speaker 02:
And that statement was the government's position before trial.

[00:09:41] Speaker 02:
That was the position that the government took at the board level because they were misunderstanding Tanaka.

[00:09:48] Speaker 02:
The cross-linking agent that Mr. Neaf used, what's claimed in claim one, is not hydrophilic.

[00:09:53] Speaker 02:
It is hydrophobic.

[00:09:54] Speaker 02:
That's why it was so non-obvious and counterintuitive to do.

[00:09:58] Speaker 02:
So this was the position the government took.

[00:10:01] Speaker 02:
And then when their erroneous nature of their theory was exposed for the first time at trial, represented by ABLE Justice Department counsel, they called an audible and completely shifted gears to what your honor was alluding to.

[00:10:12] Speaker 02:
It says, well, it doesn't have to be hydrophilic.

[00:10:15] Speaker 02:
What our experts said here is wrong.

[00:10:17] Speaker 02:
Our rule 26A disclosures were all wrong.

[00:10:19] Speaker 02:
And we're going to say, well, you could use a hydrophobic cross-linking agent.

[00:10:23] Speaker 03:
But does it really matter what the government's position was before or after?

[00:10:27] Speaker 03:
We're reviewing the district court's decision.

[00:10:29] Speaker 03:
It doesn't seem to me you raised any kind of chennery argument or that the district court has improperly relied on a legal argument.

[00:10:36] Speaker 03:
We're reviewing the district court's decision that this is obvious.

[00:10:39] Speaker 03:
And one of the things it found, and I think you argued this below,

[00:10:42] Speaker 03:
and he found against you is that Tanaka didn't teach away or didn't teach away sufficiently to prevent an obviousness finding.

[00:10:49] Speaker 02:
And I'm suggesting that that's improperly changing the question.

[00:10:53] Speaker 02:
The question is not whether Tanaka teaches away.

[00:10:55] Speaker 02:
The question is whether Tanaka provides a reason in the first instance to do what Mr. Neaf did.

[00:11:01] Speaker 01:
Why don't you address whether Tanaka does teach away?

[00:11:05] Speaker 02:
Well, we would say Tanaka of course teaches away because Tanaka in his patent says

[00:11:10] Speaker 02:
Using Tris is a bad idea, for the reasons that I mentioned, and all in column three.

[00:11:15] Speaker 02:
It says Tris is hydrophobic, and in order to use that material you have to copolymerize it with a hydrophilic comonomer, and that's hard to do, number one.

[00:11:24] Speaker 03:
But you didn't have to go to SNOCCA to get the notion of using Tris for a contact lens.

[00:11:28] Speaker 03:
No, no, but... That's in a Lord of Nellis.

[00:11:30] Speaker 02:
Of course.

[00:11:31] Speaker 02:
But what NEEF contributed, and what we have is another incredible contemporaneous demonstration of non-obviousness, is that the one artisan that was working with Tris at that time, Ellis, they were working with Tris.

[00:11:45] Speaker 02:
Number one, they not only did not deploy a NEEF system, but they regarded Tris Dimer, one of these cross-thinking agents, as an unwanted contaminant.

[00:11:56] Speaker 03:
See, can you tell me precisely what you think is wrong with the district court?

[00:12:01] Speaker 03:
Are you saying there's a legal error there or that he made factual errors in finding that there was motivation to combine these two and that Tanaka didn't?

[00:12:09] Speaker 03:
go away because it is not clear to me at all what you're arguing.

[00:12:12] Speaker 02:
What I'm arguing is that the district court did not impose upon the government the burden to show by clear and convincing evidence.

[00:12:20] Speaker 03:
Okay, let's put that aside.

[00:12:21] Speaker 03:
Assume I disagree with you.

[00:12:22] Speaker 02:
Okay, and the district court did not place

[00:12:27] Speaker 02:
upon the government, the burden to deal with the commercial success evidence and the other contemporary Spanish failure evidence properly.

[00:12:38] Speaker 02:
With respect to this specific point, for instance, we have the Boston Two Lens, we have contemporaneous documents in which the maker says, Chris Dimer is an unwanted contaminant.

[00:12:48] Speaker 02:
Then three years after the Neve patent issues, they changed their process to adopt an equivalent of the Claim One process by deliberately and purposely putting that hydrophobic cross-linking agent in it.

[00:13:01] Speaker 02:
So you have there a contemporaneous proof that a company didn't see the solution, the patent issued, they then adopt the solution, which the district court found is the fact was used in the manufacture of one of the most commercially successful contact lens products of all time.

[00:13:17] Speaker 02:
But the district court discounted that because it was putting the burden on Dome

[00:13:22] Speaker 02:
to prove the negative, that there weren't other reasons why Boston Four was so successful, other than the shift to the playbook.

[00:13:29] Speaker 01:
Okay, Mr. Dabney.

[00:13:30] Speaker 01:
I think we got that so far.

[00:13:31] Speaker 01:
You're into a bottle of time.

[00:13:32] Speaker 01:
Do you want to reserve your time?

[00:13:34] Speaker 02:
Yes, I'll reserve my time.

[00:13:35] Speaker 01:
Thank you, Your Honor.

[00:13:43] Speaker 01:
Mr. Weidenfeller.

[00:13:46] Speaker 00:
Thank you, Judge Rainer, and may it please the Court.

[00:13:48] Speaker 00:
I'd like to start, if I may, by answering Judge Hughes' last question.

[00:13:51] Speaker 00:
What is this case about?

[00:13:52] Speaker 00:
This case is about whether clear error underlies the district court's fact findings underlying its obviousness conclusion.

[00:14:01] Speaker 00:
There is no clear error.

[00:14:02] Speaker 00:
Dohm does not even really attempt to demonstrate clear error in the district court's fact findings.

[00:14:06] Speaker 00:
And that's what this case is about.

[00:14:07] Speaker 04:
Do I have to ask you the same question I asked Mr. Dabney when he got up?

[00:14:12] Speaker 04:
Does the standard of proof here

[00:14:17] Speaker 04:
control the outcome, clear and convincing evidence.

[00:14:22] Speaker 04:
I'm sorry, you know, the 282 standard or the preponderance of the evidence standard.

[00:14:30] Speaker 00:
Well, to directly answer your first question, which is does it matter, our view is that it does not.

[00:14:35] Speaker 04:
But both you and the other side kind of make that argument.

[00:14:38] Speaker 04:
Each of you argues that, well, it doesn't matter, but you each do so in kind of perfunctory fashion.

[00:14:44] Speaker 04:
I mean, it really does seem to be

[00:14:46] Speaker 04:
a pretty close case where the standard of review could make a difference.

[00:14:51] Speaker 04:
Not the standard of review, but the standard that applied at the trial.

[00:14:54] Speaker 00:
Well, with respect, Your Honor, I think that is you've hit on exactly what is the problem with Dome's argument in this case.

[00:15:00] Speaker 00:
Cathos v. Hyatt involved a standard of review, not a burden of proof.

[00:15:05] Speaker 00:
It said, what happens when a judicial review, action seeking judicial review under section 145 is brought in the district court?

[00:15:13] Speaker 00:
And it said the standard of review in such a proceeding

[00:15:16] Speaker 00:
review of the board decision is de novo if new evidence is submitted.

[00:15:20] Speaker 00:
It didn't say anything about a burden of proof.

[00:15:22] Speaker 00:
Now, what does Microsoft CI4I says?

[00:15:24] Speaker 00:
It speaks only about burdens of proof, not standards of review.

[00:15:27] Speaker 00:
Why?

[00:15:28] Speaker 00:
Because the district court in an infringement action is not reviewing the agency's decision.

[00:15:33] Speaker 00:
It is taking in evidence.

[00:15:34] Speaker 04:
No, I understand.

[00:15:35] Speaker 04:
Mr. Dabney says, though, the 282 clear and convincing evidence should apply, as opposed to what applied here, what the district court

[00:15:46] Speaker 04:
what you're urging is a preponderance of the evidence.

[00:15:48] Speaker 00:
Right, that's what he says, but Microsoft does not stand for that.

[00:15:51] Speaker 04:
Microsoft says... No, no, but I'm saying, and you don't think it makes a difference which standard is used.

[00:15:55] Speaker 00:
No, in Rayetter, this court en banc held that, at least in the fact of that case, the evidence could be so strong that under either standard of review, the agency would win.

[00:16:07] Speaker 04:
But is that the case here?

[00:16:09] Speaker 04:
Could this be a case

[00:16:10] Speaker 04:
where under one standard you win and another you lose.

[00:16:14] Speaker 00:
This could be such a case, but our position is that it is not such a case.

[00:16:16] Speaker 00:
We think that there's vast evidence supporting the district court's findings.

[00:16:21] Speaker 03:
But assuming we disagree with the standard that the district court applied and think that was clear and convincing evidence, it seems like it's close enough that we would have to send it back to the district court to look at the evidence under that standard.

[00:16:34] Speaker 03:
I understand your position that that's not the right standard, but

[00:16:37] Speaker 03:
It seems to me that this is not one of those cases where it's so clearly on one side that we could say the standard doesn't matter.

[00:16:45] Speaker 03:
I think the district court would have to reassess, wouldn't it?

[00:16:47] Speaker 00:
I think that it would be awkward for this court, assuming that Your Honor and Judge Shaw also seem to be saying that it's a pretty close case.

[00:16:54] Speaker 00:
If it were a close case, obviously, Etter would not apply.

[00:16:57] Speaker 00:
Etter was saying this is not a close case, so we don't need to reach it.

[00:17:00] Speaker 00:
the appropriate thing would be to remand it to the district court.

[00:17:03] Speaker 01:
I'm not too sure it's a close case because I'd look at Tanaka and it seems that Tanaka is saying that if you use tris material to contact lens material that it's fatal to it.

[00:17:17] Speaker 01:
Is that correct?

[00:17:17] Speaker 00:
Well what Tanaka says is that a lens consisting essentially of tris and what that means is it's a term of art in patent law meaning almost everything is tris.

[00:17:27] Speaker 00:
And Gaylord says, don't go above 70 parts by weight of Tris.

[00:17:32] Speaker 00:
So Gaylord recognizes that there is a maximum limit of Tris that you would want in a contact lens, and that's about 70%.

[00:17:37] Speaker 00:
It doesn't say go all the way to something that is almost entirely Tris.

[00:17:42] Speaker 00:
And what Tanaka is doing, Tanaka is trying to make a continuous wear lens, as the district court found, a lens that could be worn overnight, meaning

[00:17:49] Speaker 00:
while you're sleeping, the oxygen that gets to your eye is much lower.

[00:17:53] Speaker 00:
It's about one third of the oxygen content in the air underneath your eyelid as it is just in the air itself.

[00:18:00] Speaker 00:
And so you would need vastly superior oxygen permeability for it to be worn overnight.

[00:18:05] Speaker 00:
And that's what Tanaka was aiming for.

[00:18:07] Speaker 00:
And Tanaka was saying that if I were trying to use Tris to get to a continuous wear lens that I could wear overnight, I would have to use so much of it that I would exceed this Gaylord 70%

[00:18:19] Speaker 00:
number and I would end up making a lens that had problems.

[00:18:23] Speaker 00:
Gaylord says as long as you do not go above 70%, you don't have problems with opacity.

[00:18:28] Speaker 00:
It says that the lenses that Gaylord made were translucent.

[00:18:31] Speaker 00:
Gaylord says that its lenses were made wettable.

[00:18:34] Speaker 00:
Gaylord says that even lenses that were not wettable initially could be made wettable by various treatments, including corona discharge and the addition of surface wetting agents.

[00:18:46] Speaker 00:
So Gaylord makes very clear that there is an upper limit, and Tanaka recognizes that there is an upper limit, and Tanaka, in order to get the result that Tanaka wanted, would have to go beyond that upper limit.

[00:18:56] Speaker 00:
But Tanaka in no way discourages people who are seeking a prolonged daily wear lens, where the transmissibility and permeability of the lens could be much lower, because you're taking it out at night while you go to sleep.

[00:19:07] Speaker 00:
Tanaka does not teach away from using that amount.

[00:19:11] Speaker 04:
You're saying Tanaka teaches away only in the prolonged wear, namely overnight wear.

[00:19:16] Speaker 00:
Well, there's daily wear, which was what the Boston 2 lens was.

[00:19:21] Speaker 00:
It was a transmissibility of about 12.

[00:19:24] Speaker 00:
And you couldn't actually wear it for a full day.

[00:19:26] Speaker 00:
You can maybe wear it for your working day, but you'd come home, take your lenses out, and wear your glasses for dinner in the evening because you couldn't wear it for the entire day.

[00:19:36] Speaker 00:
Prolonged daily wear is a transmissibility or a permeability of around 18 to 20, so almost twice as much.

[00:19:44] Speaker 00:
And that is something that you can wear in your eye all day, but you have to take it out for sleeping.

[00:19:49] Speaker 00:
Tanaka was looking for continuous wear, which is something that you can wear.

[00:19:52] Speaker 04:
I knew it was overnight wear, but I used the wrong term, continuous.

[00:19:56] Speaker 04:
Continuous as opposed to daily prolonged wear.

[00:19:59] Speaker 00:
Correct.

[00:19:59] Speaker 00:
That's correct, Your Honor.

[00:20:00] Speaker 00:
And that's what the district court found.

[00:20:02] Speaker 00:
And Tanaka says that his cross-linking agents, he calls out two particular classes of cross-linking agents as preferably employed in his invention.

[00:20:12] Speaker 00:
He calls them formula five and formula six.

[00:20:16] Speaker 00:
Mr. Dabney says today that the claim in NEIF picks out one of those, just one of these many, many thousands or hundreds at least of chemicals.

[00:20:26] Speaker 00:
That's not the case.

[00:20:28] Speaker 00:
The NEIF patent claims formula six.

[00:20:31] Speaker 00:
So it claims one of those two.

[00:20:33] Speaker 00:
And Tanaka says both are preferably employed.

[00:20:35] Speaker 00:
Tanaka shows no indication that

[00:20:38] Speaker 00:
He prefers one over the other, and he would be afraid of using a hydrophobic cross-linker in his lens.

[00:20:46] Speaker 00:
He says it's preferably employed.

[00:20:47] Speaker 00:
Now, he goes on and says that the one that's hydrophilic may have beneficial properties for wettability, but he says both the hydrophilic monomer, or cross-linker rather, and the hydrophobic cross-linker are preferably employed.

[00:21:00] Speaker 00:
He shows no distinction.

[00:21:02] Speaker 00:
And the claim range, it can be as low as 0.01%.

[00:21:07] Speaker 00:
of the chemicals present in the polymer fall within the claims scope of this claim.

[00:21:14] Speaker 00:
So we have Gaylord teaching that you can be up to 70% of a hydrophilic monomer and still have no problems.

[00:21:21] Speaker 00:
And the theory that Dome had in this case was that adding 0.01% to something as low as 5% to get 5.01%, a polymer chemist would never do that.

[00:21:35] Speaker 00:
It would be terrified of making that amount.

[00:21:36] Speaker 00:
that flies in the face of Gaylord.

[00:21:38] Speaker 00:
Gaylord indicates absolutely to the contrary.

[00:21:41] Speaker 00:
Gaylord indicates that you can go drive up to 70% hydrophilic monomers and not even worry about whether the lens itself at the end of the day will be wettable.

[00:21:51] Speaker 00:
Mr. Dabney today says that we came up with this theory in the middle of trial.

[00:21:55] Speaker 00:
That's not the case.

[00:21:56] Speaker 00:
In our expert report, our expert repeatedly pointed to, three times in the expert report, pointed to the references in Gaylord indicating

[00:22:06] Speaker 00:
that Gaylord can be made hydrophilic through uses of the surface conditioners such as the corona discharge or the surface wetting agents.

[00:22:15] Speaker 00:
He said it three times.

[00:22:16] Speaker 00:
It was consistently throughout the case in the government's position.

[00:22:20] Speaker 00:
And I also believe that Judge Hughes is correct.

[00:22:23] Speaker 00:
They did not object to trial.

[00:22:24] Speaker 00:
There's no reason why the district court's decision relying on the evidence in this case.

[00:22:29] Speaker 01:
So in your view, what is it that Tanaka says about the use of Tris on contact lens material?

[00:22:35] Speaker 00:
Tanaka says that to get where Tanaka wants to go, which is a lens that you can wear overnight, he can't get there with Tris.

[00:22:43] Speaker 01:
Let's start with his language that the use of Tris on contact lens materials is fatal to it.

[00:22:48] Speaker 01:
It turns it opaque.

[00:22:50] Speaker 00:
He says that the use of a lens consisting essentially of Tris, which in patent law means almost 100% Tris.

[00:22:56] Speaker 00:
There can be a couple other things in there, maybe five, three, five percent, but

[00:23:02] Speaker 00:
consisting essentially of means almost altruists and that is not at all inconsistent with Gaylord's teaching that you can have up to 70% interest.

[00:23:09] Speaker 00:
What Tanaka is saying is that for him to get the transmissibility that he needs for overnight wear, he would need to go blast beyond that 70% number that Gaylord teaches and then that's where you run into problems with the contact lenses.

[00:23:27] Speaker 00:
Okay.

[00:23:27] Speaker 00:
And I guess the

[00:23:31] Speaker 00:
The final point I would make is on the secondary considerations evidence.

[00:23:34] Speaker 00:
I think that the district court properly discounted Dr. Malama's testimony.

[00:23:39] Speaker 00:
It's much like this court's Tanaka decision from this Wednesday in footnote six.

[00:23:45] Speaker 00:
It says the evidence from one doctor about what that one doctor did is not probative of what the body of doctors would do.

[00:23:51] Speaker 00:
That's what Dr. Malama's testimony was.

[00:23:53] Speaker 00:
It was how he prescribed the Boston Four in his practice.

[00:23:59] Speaker 00:
were Dr. Malamud's evidence to be given weight, the district court properly found that Dr. Malamud undercut his own testimony by testifying as to the many benefits of the Boston Four Lens beyond its increased oxygen permeability.

[00:24:12] Speaker 00:
And therefore, it correctly discounted the secondary considerations evidence and upheld the agency's decision.

[00:24:20] Speaker 00:
If there are no further questions, I'll yield the remainder of my time.

[00:24:22] Speaker 00:
No further questions.

[00:24:23] Speaker 00:
Thank you.

[00:24:29] Speaker 02:
Adriana, in response to your question, what Tanaka says about the use of tris is summarized in column three, and he doesn't say, use it except when you don't want to do a continuous wear lens.

[00:24:39] Speaker 02:
That was the theory that the government put forward for the first time.

[00:24:43] Speaker 01:
Does it make a distinction whether the lens is for prolonged use or daily use?

[00:24:49] Speaker 02:
The reference on itself does not.

[00:24:51] Speaker 02:
The reference says, if you take the government's best view of it, he says,

[00:24:56] Speaker 02:
for a lens that you want to wear for a long period of time, you should not use something other than what I'm proposing here.

[00:25:04] Speaker 02:
But it doesn't say anything about, well, you can use Tris for something else.

[00:25:08] Speaker 02:
He's proposing a completely different system of contact lens material.

[00:25:12] Speaker 02:
So this is a contemporaneous failure, not a reference that says, well, what you should do, there's a reason here.

[00:25:19] Speaker 02:
and you'll have a reasonable expectation of success in making a contact lens if you use Tris Monomer and use a cross-linking agent that NEEF used.

[00:25:29] Speaker 02:
It's just not there.

[00:25:31] Speaker 02:
I did not hear any response at all to the point about 1982 and 1983 of the record.

[00:25:38] Speaker 02:
The board decision in this case completely misread the Tanaka reference.

[00:25:42] Speaker 02:
The board decision misunderstood that the cross-linking agents described

[00:25:48] Speaker 02:
on pages in the record, it's column 8, 2146.

[00:25:53] Speaker 02:
If you read the board's decision in this case, they wrongly assumed they were all hydrophilic compounds.

[00:25:59] Speaker 02:
That's what their experts said, and they cited that as a reason why you would do it, because hydrophilicity would overcome one of the well-recognized problems of using Tris.

[00:26:11] Speaker 02:
And it was only when that error was pointed out to them, and they didn't

[00:26:14] Speaker 02:
They didn't distinguish between alkenol esters and alkyl esters that they started talking about corona discharge and all these other hypothetical ways of trying to arrive at a rationale for coming up with needs.

[00:26:26] Speaker 02:
This is why the burden of proof is so important in this case.

[00:26:29] Speaker 02:
Microsoft was a watershed event in patent law.

[00:26:32] Speaker 02:
Microsoft said 282A codified a standard of proof, which is part of the patent grant.

[00:26:38] Speaker 02:
And reduce risk of erroneous adjudication is one of the rights that a patent owner has, and his rights can't be taken away without the same degree of confidence in the truth that is necessary in order to take someone's citizenship away, in order to take someone's custody rights away, in order to commit someone to a mental institute.

[00:26:55] Speaker 01:
Would you like to conclude?

[00:26:58] Speaker 02:
Yes.

[00:26:58] Speaker 02:
In this case, you don't need to resort to hyperbole like death.

[00:27:03] Speaker 01:
That's a short conclusion.

[00:27:04] Speaker 02:
Yes.

[00:27:06] Speaker 02:
Patent trial and appeal boards are courts.

[00:27:09] Speaker 02:
The statute makes no exception for cases in which the tribunal is a patent trial on appeal board or the litigant attacking the patent is the director of the Patent and Trademark Office.

[00:27:18] Speaker 02:
It's a textualist decision and the district court did not apply the right standard.

[00:27:22] Speaker 01:
Thank you.